Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2301002026276
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ssecurianservice.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 4, 2023; Forum received payment on January 4, 2023.
On January 5, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <ssecurianservice.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ssecurianservice.com. Also on January 6, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant has served clients since 1880 and has sixty-four billion dollars in assets under management. Complainant provides insurance, investment, and retirement products to its clients. Complainant has rights in the SECURIAN and SECURIAN FINANCIAL SERVICES marks through Complainant’s registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,637,008, registered October 15, 2002 and Reg. No. 2,637,006, registered October 15, 2002). The disputed domain name is identical or confusingly similar to Complainant’s SECURIAN and SECURIAN FINANCIAL SERVICES marks as it merely adds the letter “s” and generic word “service” and the “.com” generic top-level-domain name (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized or licensed by Complainant to use the SECURIAN or SECURIAN FINANCIAL SERVICES marks. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent has never placed any information on the website other than advertising links that relate to Complainant’s services. In addition, Respondent is using the domain name to forward to third party websites that offer competing products.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the domain name to trade upon the goodwill associated with the Complainant’s marks and to divert traffic away from Complainant’s websites for Respondent’s financial gain. Complainant owns the domain name <securianservice.com>. This domain name forwards to Complainant’s login page. Respondent shows opportunistic bad faith by diverting users that mistype the domain name by a single letter to Respondent’s website. Respondent has registered multiple domain names associated with the SECURIAN marks. Respondent is a named respondent in 248 decisions before the Forum, further demonstrating bad faith.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on December 19, 2022.
2. Complainant has established rights in the SECURIAN and SECURIAN FINANCIAL SERVICES marks through Complainant’s registration of the marks with the USPTO (e.g., Reg. No. 2,637,008, registered October 15, 2002 and Reg. No. 2,637,006, registered October 15, 2002).
3. The disputed domain name’s resolving webpage displays advertising links that include Complainant’s services or forward to third party websites for offerings of competing financial services.
4. Respondent is engaged in a pattern of bad faith registration and use of the disputed domain name as demonstrated by Respondent’s extensive history of negative UDRP decisions.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the SECURIAN and SECURIAN FINANCIAL SERVICES marks through its registration of the marks with the USPTO (e.g., Reg. No. 2,637,008 registered October 15, 2002 and Reg. No. 2,637,006 registered October 15, 2002). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). As Complainant provides evidence of the trademark registrations, the Panel finds Complainant has established rights in the SECURIAN and SECURIAN FINANCIAL SERVICES marks per Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name <ssecurianservice.com> is identical or confusingly similar to Complainant’s SECURIAN and SECURIAN FINANCIAL SERVICES marks as it merely adds the addition of the letter “s” and the generic word “services” and the “.com” gTLD. The addition of the letter “s” fails to sufficiently distinguish a disputed domain from a mark. The addition of a generic term and a gTLD also fails to sufficiently distinguish a disputed domain from a mark. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the SECURIAN or SECURIAN FINANCIAL SERVICES marks. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The unmasked WHOIS information for the disputed domain name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends that Respondent fails to use disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent failed to place any legitimate content on the website. The only content listed on the disputed domain name’s resolving website is advertising links that include Complainant’s services or forward to third party websites. Complainant provides screenshots of the disputed domain name’s resolving webpage showing advertising links that include Complainant’s services or forward to third party websites for offerings of competing financial services. Use of a disputed domain name for advertising links that include Complainant’s services or forward to third party websites does not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Thus, the Panel finds Respondent does not provide a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent registered the disputed domain name in bad faith to intentionally trade on Complainant’s goodwill for commercial gain by creating a likelihood of confusion with Complainant’s marks. Use of a disputed domain name to offer links in competition with a complainant’s business may represent bad faith per Policy ¶ 4(b)(iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Here, Complainant asserts Respondent’s resolving website directly offers links that are related to Complainant’s business offerings creating a likelihood of confusion. The Panel recalls that Complainant provides screenshots of the disputed domain name’s resolving webpage showing advertising links that include Complainant’s services or forward to third party websites for offerings of competing financial services. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Next, Complainant contends that Respondent has registered multiple domain names associated with the SECURIAN marks. Respondent is a named respondent in 248 decisions before Forum, further demonstrating bad faith. The Panel observes that past UDRP actions against a respondent which resulted in the transfer of the respondent’s registered domain names are evidence of bad faith under Policy ¶ 4(b)(ii). See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“A reverse-WHOIS search for domain names registered to Lisa Katz (the person behind Respondent), reveals over 100 domains. “Of this list, 67 use the same email, support@domainp.net, as the Complainant.”) ; see also DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”); see additionally Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). The Panel notes that Respondent has registered multiple domain names associated with the SECURIAN marks. Respondent is a named respondent in 248 decisions before Forum, most of which resulted in the transfer of the domain names. Therefore, the Panel finds that Respondent has a pattern of bad faith registration and use of domain names as demonstrated by Respondent’s extensive history of negative UDRP decisions, and thus Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(ii).”
Complainant further contends Respondent registered and uses the disputed domain name with actual knowledge of Complainant’s rights in the SECURIAN and SECURIAN FINANCIAL SERVICES marks. Registration of a disputed domain name with actual knowledge of a complainant’s rights in the mark prior to registration may constitute bad faith per Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Complainant asserts that the misspelling of the domain name by adding an “s” shows that Respondent knew of the SECURIAN mark and registered it in bad faith. In addition, the resolving website offers advertisements for the types of products and services that are confusingly similar to the services that Complainant offers, including links to “401K Retirement Plans” and “401k retirement.” Complainant points out that the only company that offers financial services and 401K retirement plans in connection with the name “Securian” is the Complainant in this proceeding. The Panel infers, due to the notoriety of Complainant’s marks and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the SECURIAN and SECURIAN FINANCIAL SERVICES marks at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ssecurianservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 6, 2023
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